Failure to Renew Trademark Registration
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What is a Trademark?
A trademark is a word, phrase, logo or other symbol, used to identify a product, the source of a product, and the manufacturer or merchant. It is a good idea for trademark owners to register their trademark with the Patent and Trademark Office. Trademarks also help businesses protect the names, logos, and other commercial designs used to identify their products and services.
One of the main purposes of trademarks is to prevent consumer confusion about what brand or type of product they are using. Another goal is to prevent a business from trading off another business’s good will and symbol.
What Is The Difference Between a Trademark and Copyright?
Trademarks are used as identifiers of commercial products and services. The primary purpose for the use of trademarks is for businesses to distinguish their brand or logo from others and to prevent unfair competition by preventing consumers from being confused in what brand or services they are using.
On the other hand, copyrights generally protect creative designs that are made by an individual. A copyright does not prevent others from creating similar or even the same design as long as the creation is independent from and the creator has not had previous access to the other design. The copyright owner has rights for a term of 50- 100 years depending on the entity or individual owning the copyright. The trademark owner’s rights are indefinite and do not really have a set term in place as long as the trademark is properly used and protected by the owner.
What Are the Different Types of Trademark?
There are many different types of trademarks that brand a business or company. Trademarks can be unique words, logos, slogans, symbols, or characters that are used to identify the source and brand of a product. Trademarks distinguish a manufacturer’s product from another manufacturer’s product. For example, brands such as Nike, Addidas, and Apple all have their own type of logo that distinguishes their brand from other brands.
Companies can also use service marks, which are similar to trademarks. While trademarks promote products, service marks promote services and events. For example, Google is a service mark that is used for online search services.
What Are the Special Benefits of Registering a Trademark?
Registering a trademark can provide several benefits to the trademark owner, including but not limited to:
- Constructive notice to the public of the owner's claim of ownership of the trademark. In other words, registering a trademark prevents ignorance from being a defense. If the trademark was registered, nobody can argue that they didn’t know the trademark existed.
- A legal presumption of ownership of the trademark and the owner's exclusive right to use the trademark in the United States. That means the court will assume you are the rightful owner and the other party has the burden of proving otherwise.
- A basis to obtain trademark registration in other countries.
This does not mean that it is impossible for a trademark owner who has not registered the mark to sue an alleged infringer. The trademark owner may still be able to sue the infringer if the phrase or symbol misleads the consumer into believing the product came from another source. However, it is much easier to win a case, and collect large monetary damages, if the trademark has been registered.
How Long Does a Trademark Registration Last?
Once the Patent and Trademark Office have approved the trademark, it will be registered for a term of ten years. Six years into the ten-year period, the owner must then file a Section 8 affidavit stating either that the trademark is still in use or that the trademark is no longer in use for legitimate reasons. Otherwise, the registration may lapse.
Note that while a trademark registration has a limit of ten years, the trademark itself may exist indefinitely. For instance, if a company ceases to register their trademark, they still have the rights to their trademark. However, well-known companies such as Starbucks could more easily assert their trademark rights even if they didn’t register their trademarks. Less known companies would desire the protection of the registration.
What Happens If I Fail to Renew my Registration?
If the trademark owner fails to timely file a Section 8 affidavit before the end of the sixth year following registration, the registration will be cancelled. Failure to file the Section 8 affidavit to renew a registration does not void all the owners' rights to the mark, but the owner will lose the special benefits of federal registration. The Patent and Trademark Office will not accept a substitute Section 8 affidavit after the deadline. Instead, to retain the special benefits of federal registration, the trademark owner must re-register the trademark with the Patent and Trademark Office.
Do I Need a Lawyer Specializing in Trademark Law?
The trademark application process can be very complicated, and the Patent and Trademark Office will not offer any assistance in the preparation of application papers. Also, there are several crucial deadlines for maintaining the registration of a trademark. It is a good idea to hire a trademark attorney to help you with the process of applying for and maintaining a trademark.
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Last Modified: 08-14-2015 10:44 AM PDT
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